This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

For many years there has been a lively discussion in the EU on whether the use of visible spare parts originating from third party producers for repairing complex products is a blatant design right infringement or desirable competition.

The main battlefield is spare parts for cars. This matter has so far not been resolved on the European level even if there are some attempts to introduce a "repair clause" aimed at opening up the spare parts market in the EU. Poland decided to wait no longer and introduced its own repair clause into the Polish Act of 30 June 2000 on Industrial Property Law (IPL) on 1 November 2007. It fundamentally breaks up the monopoly conferred by industrial designs registered with the Polish Patent Office. This amendment also complies with Directive 98/71/EC concerning the legal protection of industrial designs, which allows member states to introduce changes to their legal systems to liberate the spare parts market (a freeze-plus clause).

Monopoly resulting from the registration of an industrial design

Registering an industrial design protects new and individual products and their parts, in particular due to their unique features such as line, outline, shape, colour, structure, material and ornamentation. Also, a component, being an integral part of a more complex product, may be subject to individual protection if it, after being incorporated into the complex product, remains visible during standard use. In the case of cars, this requirement is met in the case of the body, bumpers, windows, wing mirrors, bumper strips and lights, among others. Spare parts which are invisible during normal use may not be registered, meaning they are not subject to any monopoly by producers of complex products (e.g. car manufacturers).

Protection under national design law requires a formal registration with the competent local authority. The owner of such a registration acquires the right to the exclusive use of the industrial design in Poland for a maximum period of 25 years. He may prohibit third parties from manufacturing, offering, marketing, importing, exporting or using a product in which the design is contained or applied. This limited monopoly is meant to encourage the creation of new designs, thereby enhancing competition in the long run.

Repair clause – Breaking up the monopoly

The repair clause, which was introduced into the IPL, states: "1. Registered designs shall grant no protection against products being a component of a complex product, used for the repair of such product in such a manner as to restore its original appearance. 2. Third parties may use the product referred to in paragraph 1 by manufacturing, offe2 ring, marketing, importing, exporting or using such product in which a design is contained or applied, or by storing such product for the above purposes". The repair clause does not affect the prerequisites or rules for registering industrial designs. Visible spare parts may still be registered as industrial designs (and such registration continues to remain significant). However, the repair clause considerably limits the exclusive right a registered design confers on its owner. The entitled person may not object to the use of products which form an integral part of the complex product by third parties if such part is used for the repair of the latter in order to restore its original appearance.

An independent manufacturer may produce visible spare parts, protected under the industrial design registration, provided that it uses them to repair a product so as to restore its original appearance. The use of such non-original spare parts for other purposes (e.g. the production of collapsible cars or the tuning of existing cars) is excluded.

Owners of Polish registered designs will only be able to assert their rights if spare parts which do not produce a different overall impression than their registration are used in a manner incompatible with the repair clause.

More importantly, the monopoly resulting from designs which were granted before the amendment came into force (i.e. before 1 November 2007) has now been broken up.

As mentioned, the provisions on the scope of protection of visible spare parts have not been harmonised in the national laws of the EU member states. Consequently, an independent Polish manufacturer of spare parts legally produced in Poland who wishes to market them in another country where no such repair clause exists risks being sued by owners of local design rights.

The monopoly resulting from designs which were granted before the amendment came into force has now been broken up.

This article was originally published in the schoenherr roadmap`10 - if you would like to receive a complimentary copy of this publication, please visit: http://www.schoenherr.eu/roadmap.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.